Member of Danone group obtains cancellation of local company's mark

Nutricia International BV, part of the Danone group, has obtained a second positive final decision in a cancellation action brought against a local producer of milk and milk products, SC Avi Seb Impex SRL.

Avi had registered with the Romanian Trademark Office the device mark MILAPO (depicted below) for all goods in Class 29 of the Nice Classification, including milk and milk products. The mark was cancelled by the Bucharest Court of Appeal in a decision which remained final due to procedural issues.

Subsequently, Avi also registered with the Trademark Office a MILAPO device mark for all goods in Class 29, including "milk and milk products":

Nutricia is the owner of the following trademarks:

• the Community word mark MILUPA (Registration 007198773), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5 and “milk and milk products” in Class 29;
• the figurative Community trademark (CTM) MILUPA (Registration 006651939), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5 and all goods in Class 29:
  
• the figurative CTM MILUPA (Registration 005065156), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5:
  

Nutricia considered that its prior trademark rights were infringed by Avi’s registration, especially taking into account the inherent distinctiveness, and distinctiveness acquired through use in Romania, of the MILUPA marks. Therefore, Nutricia decided to file a cancellation action against Avi's registration for the MILAPO device mark.

Nutricia’s arguments in court were extensive. They included, but were not limited to:

• the similarity of the trademarks;
• the fact that ‘milapo’ was the principal element of the contested mark;
• the existence of a disclaimer for ‘cascaval Pintea’ in the contested mark;
• the high distinctiveness of the CTMs, which was not only inherent, but also acquired through extensive use in Romania, and was evidenced by the sales volumes, surveys and the amount of advertising and marketing undertaken by Nutricia in Romania in connection with the brand;
• the fact that the beginning of trademarks is of high importance;
• the identity of some of the products and the similarity of the remaining products; and
• the risk of confusion and association.

In its judgment (29A/2013), the Bucharest Court of Appeal decided to cancel the MILAPO device mark due to:

• the similarity of the trademarks, based on:

1. the principle that, when appreciating the verbal similarity between two marks, the beginning of the trademarks is of high importance (here, the compared trademarks had the same prefix, ‘mil’);
2. the disclaimer for ‘cascaval Pintea’; and
3. the insufficient distinctiveness of the device;

• the identity of the products; and
• the risk of association, as consumers might consider that there was a link between the two trademarks.

The decision of the court is significant, not only for Nutricia, which invested large sums of money in establishing a reputation for its MILUPA marks in Romania, but also as a precedent, as the court confirmed that MILUPA has a high distinctiveness in Romania.

The decision of the Bucharest Court of Appeal is final and binding. Avi filed a second appeal to the Supreme Court of Romania, which was rejected on procedural grounds on April 1 2014.

The decision of the Bucharest Court of Appeal in this case will most probably be followed by other courts.

Arguably, more pharmaceutical and nutritional companies can now take similar actions based on this decision, and rely on their well-known trademarks or famous registered trademarks to request the cancellation of identical or similar trademarks, provided that such identical or similar trademarks fall within the five-year statute of limitation provided by law.

Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest

Andra Musatescu Law & Industrial Property Offices acted for Nutricia in this case